Paul Frank Industries LLC v. 兰 子翔 / PPR
Claim Number: FA1401001539597
Complainant is Paul Frank Industries LLC (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., USA. Respondent is 兰 子翔 / PPR (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paulfrank-bedding.com>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2014; the National Arbitration Forum received payment on January 16, 2014.
On January 21, 2014, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <paulfrank-bedding.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the names 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@paulfrank-bedding.com. Also on January 21, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <paulfrank-bedding.com> domain name, the domain name at issue, is confusingly similar to Complainant’s PAUL FRANK mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant manufactures, advertises, and sells a wide array of products, including bedding sets, clothing, and sunglasses and has been in business since at least 1995. Complainant operates roughly 100 stores in China and has had a web presence since at least 2002 via its website located at <paulfrank.com>. Complainant has rights in the PAUL FRANK mark, used in connection with bedding products and owns registrations for the PAUL FRANK mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,563,723 registered January 20, 2009) as well as a registration with China’s State Administration for Industry and Commerce (“SAIC”) (Reg. No. 5269272 registered June 28, 2009). Respondent’s <paulfrank-bedding.com> domain name is confusingly similar to Complainant’s PAUL FRANK mark. The disputed domain name includes Complainant’s mark in its entirety while adding the generic term “bedding” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its PAUL FRANK mark in any manner. Respondent is using the <paulfrank-bedding.com> domain name to offer counterfeit PAUL FRANK products and is attempting to pass itself off as Complainant by using the “Julius the Money” logo associated with Complainant’s products on the resolving website. Respondent is disrupting Complainant’s business by using the disputed domain name to offer counterfeit PAUL FRANK products that unfairly compete with Complainant. Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s PAUL FRANK mark. Specifically, as previously noted, Respondent is using the <paulfrank-bedding.com> domain name to offer counterfeit PAUL FRANK products. Respondent had knowledge of Complainant’s PAUL FRANK mark prior to registering the <paulfrank-bedding.com> domain name because Complainant’s mark is internationally famous and Respondent is offering counterfeit versions of Complainant’s goods on the resolving website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the PAUL FRANK mark, used in connection with bedding products and owns registrations for the PAUL FRANK mark with the USPTO (e.g., Reg. No. 3,563,723 registered January 20, 2009) as well as a registration with China’s SAIC (Reg. No. 5269272 registered June 28, 2009). Therefore, Complainant has rights in the PAUL FRANK mark pursuant to Policy ¶ 4(a)(i) because Complainant owns registrations for the mark with the USPTO and SAIC. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <paulfrank-bedding.com> domain name is confusingly similar to Complainant’s PAUL FRANK mark. The disputed domain name includes Complainant’s mark in its entirety while adding the generic term “bedding” and the gTLD “.com.” The disputed domain name also adds a hyphen. The addition of a generic term to a trademark in a disputed domain name does not sufficiently differentiate the disputed domain name from the trademark. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Further, the additions of a hyphen and a gTLD are irrelevant for the purposes of confusing similarity analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Therefore, the Panel finds that Respondent’s <paulfrank-bedding.com> domain name is confusingly similar to Complainant’s PAUL FRANK mark within the meaning of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its PAUL FRANK mark in any way. The WHOIS record for the disputed domain name lists “兰 子翔” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the PAUL FRANK mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <paulfrank-bedding.com> domain name under Policy ¶ 4(c)(ii).
Respondent is using the <paulfrank-bedding.com> domain name to offer counterfeit PAUL FRANK products. In previous cases, panels have found that such conduct via confusingly similar domain name does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See World Wrestling Entertainment, Inc. v. xie yue hong / Li xiao, FA 1511882 (Nat. Arb. Forum Aug. 30, 2013) (finding that Respondent’s unauthorized sale of these counterfeit goods does not create either a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use via the <paulfrank-bedding.com> domain name, because Respondent is using the disputed domain name to offer counterfeit versions of Complainant’s products.
Respondent is attempting to pass itself off as Complainant by using the “Julius the Money” logo associated with Complainant’s products on the resolving website. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Further, past panels have found that passing off is evidence of a respondent’s lack of rights and legitimate interest in the disputed domain name. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, since Respondent is attempting to pass itself off as Complainant, based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <paulfrank-bedding.com> domain name, the Panel holds that this activity provides further evidence of Respondent’s lack of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is disrupting Complainant’s business by using the disputed domain name to offer counterfeit PAUL FRANK products that unfairly compete with Complainant. Past panels have found that operating a competing business using counterfeit goods via a confusingly similar domain name demonstrates bad faith via disruption under Policy ¶ 4(b)(iii). See Louis Vuitton Malletier S.A., L.L.C. v. David, FA 1138296 (Nat. Arb. Forum Mar. 5, 2008) (concluding that the complainant’s business is disrupted by the respondent’s registration and use of the disputed domain name for the purpose of selling counterfeit products). Therefore, the Panel finds that Respondent registered and is using the <paulfrank-bedding.com> domain name in bad faith under Policy ¶ 4(b)(iii) by using the disputed domain name to offer counterfeit versions of Complainant’s products.
Respondent is attempting to attract Internet users for Respondent’s own commercial gain by creating a likelihood of confusion with Complainant’s PAUL FRANK mark. Specifically, Complainant states that Respondent is using the <paulfrank-bedding.com> domain name to offer counterfeit PAUL FRANK products. Past panels have found that using a confusingly similar domain name to sell counterfeit versions of a complainant’s products constitutes bad faith under Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Nat. Arb. Forum Oct. 23, 2008) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent created confusion as to the complainant’s connection with the website by selling counterfeit products). Therefore, the Panel finds that Respondent registered and is using the <paulfrank-bedding.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent is using the disputed domain name to sell counterfeit versions of Complainant’s products.
Further, Respondent is attempting to pass itself off as Complainant by using the “Julius the Money” logo associated with Complainant’s products on the resolving website, which constitutes bad faith. In H-D v. Private Whois Service, FA 1328876 (Nat. Arb. Forum July 12, 2010), the panel found that use of the complainant’s Harley Davidson logo, mark, and a similar color scheme to the one used by the complainant was sufficient to find that the respondent was attempting to pass itself off as the complainant. Past panels have also found that passing off is evidence of a respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Therefore, the Panel finds that Respondent is attempting to pass itself off as Complainant, based on sufficient evidence of Respondent’s use of Complainant’s logo, mark, and color scheme on the website connected to the <paulfrank-bedding.com> domain name. Accordingly, the Panel holds that this is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii)
Respondent had knowledge of Complainant’s PAUL FRANK mark prior to registering the <paulfrank-bedding.com> domain name because Complainant’s mark is internationally famous and Respondent is offering counterfeit versions of Complainant’s goods on the resolving website. Constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel finds that Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name. Accordingly, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paulfrank-bedding.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 13, 2014
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